OPPOSITION No B 2 618 851

Carrefour, SA, 33, avenue Emile Zola, 92100 Boulogne Billancourt, France (opponent), represented by Novagraaf France, Bâtiment O2 - 2, rue Sarah Bernhardt, CS 90017, 92665 Asnières-sur-Seine, France (professional representative)

a g a i n s t

L&S Lauf- & Sport Shop GmbH, Saarburger Ring 19-21, 68229 Mannheim

Germany (applicant), represented by Stephan Biagosch, Truderinger Str. 246, 81825 München, Germany (professional representative).

On 31/05/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 618 851 is upheld for all the contested goods, namely

Class 25: Clothing, footwear, headgear.

2. European Union trade mark application No 14 449 508 is rejected for all the contested goods. It may proceed for the remaining goods.

3. The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 14 449 508 namely against all the goods in Class 25. The opposition is based on French trade mark registration No 1 205 373. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based French trade mark No 1 205 373.

The request was submitted in due time and is admissible as the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

The contested application was published on 09/09/2015. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use France from 09/09/2010 to 08/09/2015 inclusive.

Furthermore, the evidence must show use of the trade mark for these on which the opposition is based:

Class 25: Clothing including boots shoes and slippers.

According to Rule 22(3) EUTMIR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 14/07/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 19/08/2016 to submit evidence of use of the earlier trade mark. On 19/08/2016, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is, in particular, the following:

Annex 1

Evidence No 1 to 6:

Twelve catalogues displaying, inter alia, the relevant goods sold by Carrefour in connection with the following logos containing the word element ‘TEX’ from 2010 to 2015.

Eight of these catalogues, at least one per year, show visible dates that fall within the relevant period. The prices appear in Euro and the text is in French.

Evidence No 7:

26 invoices from April 2012 to July 2013 (with corresponding offer sheets displaying the same item reference number) to the tune of over 100,000 USD where the text ‘TEX Private label PL’ appears only on the offer sheets. These documents show sales of the relevant goods in 23 of the invoices from Turkey (7), Bangladesh (6), India (5), China (3), Indonesia (1), and Morocco (1) to Carrefour in France. One invoice shows goods bought in Turkey to be delivered to Spain. The currency is USD.

Annex 2

INPI DECISION

A decision issued by INPI, the French patent and trade mark office on 10/06/2015 within the relevant period in relation to the opposition filed on the basis of the figurative trademark against the French trade mark application MENTEX. The decision refers to the knowledge of the earlier mark in the French territory which provides TEX with a strong distinctive character with respect to, inter alia, clothing and footwear.

Assessment of the evidence - factors

In accordance with Rule 22(3) EUTMIR, the indications and evidence required in order to provide proof of use must consist of indications concerning the place, time, extent and nature of use of the trade mark for the relevant goods and/or services.

These requirements for proof of use are cumulative (judgment of 05/10/2010, T-92/09, STRATEGI, EU:T:2010:424, § 43). This means that the opponent is obliged not only to indicate but also to prove each of these requirements. However, the sufficiency of the indication and proof as to the place, time, extent and nature of use has to be considered in view of the entirety of the evidence submitted.

With regard to the nature of use, the various catalogues shows the trade mark ‘TEX’ appearing beside many articles of all kinds of clothing including the specific items included in the specification. The applicant points out that the earlier mark is used in the form of a logo as represented below:

The applicant argues that such use alters the distinctive character of the earlier mark which is registered as a word mark. In this respect, it should be recalled that a sign is generally read or perceived from left to right and from top to bottom (06/10/2004, T-117/03 – T-119/03 & T-171/03, NL, EU:T:2004:293, § 28), which makes the part placed at the left/top of the sign (the initial part) the one that first catches the attention of the reader. Furthermore, the sign shows the first letter ‘T’ written in uppercase and placed at the left side of the first top square, immediately followed by the letter ‘e’ written in lowercase and placed at the right side of the square right underneath and next to another square containing the letter ‘X’. Therefore, the sign can only be read ‘TEX’. Previous decisions in trade mark conflicts implying this sign state, in sum, that the figurative elements are rather simple geometrical figures (four squares) to bring the word element ‘TEX’ to the attention of the public (22/01/2014, B 2 169 376, ‘TEXLAB’ / ‘TEX’ (fig.); 18/10/2013, B 2 097 858, ‘TEX’ (fig.) / ‘TEX’ (fig.); 14/09/2012, B 1 878 605, ‘G-TEX’ (fig.) / ‘TEX’ (fig.), 28/11/2013, R 167/2013-5, ‘T-TEX’ / ‘TEX’ (fig.)).

The Boards of Appeal confirmed this approach in the case R 1808/2014-2 coming to the conclusion that the earlier French word mark ‘TEX’ used as the figurative sign had been used in a form differing in elements which do not alter the distinctive character in the form it was registered within the meaning of Article 15(1), second subparagraph, point (a) EUTMR (17/09/2005, R 1808/2014-2-on tex (fig.) /TEX, § 29). As the present case deals with the same question, the Opposition Division concludes that the evidence shows that the mark has been used as registered for all the goods for which the mark is registered. In addition the earlier mark has been used outwardly targeting the relevant French public.

Therefore regarding the nature of use, use has been shown in relation to the broad category of clothing and also for those specific items; boots, shoes and slippers.

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.

The INPI decision of 10/06/2015 refers to the knowledge of the earlier mark in the French territory which provides the mark with a strong distinctive character with respect to, inter alia, clothing and footwear. However it must be pointed out that the earlier mark in that case was the figurative mark and not the word mark ‘TEX’ as in the present case. However, as clarified above, use of this figurative mark does not alter the distinctive character of the word mark ‘TEX’ and therefore the conclusions of the decision with respect to the distinctive character of the figurative mark in the relevant territory, France, also apply to the word mark ‘TEX’.

The applicant argues that the opponent did not submit full translations of the INPI decision and therefore this evidence should not be taken into consideration. However the opponent did submit a translation of what it considered the relevant parts of the INPI decision and the Opposition Division considers that there is no need to request a full translation. In addition the applicant argues that the opponent did not submit the evidence that had been submitted to the INPI to prove reputation and as a consequence the INPI decision is of no significance. The Opposition Division agrees that neither enhanced distinctiveness nor reputation has been proved given the lack of evidence to show such distinctiveness or reputation. However some weight is given to the fact that an authority in intellectual property in France has recognised the strong distinctive character that the earlier mark has acquired in France. It follows that the word mark ‘TEX’ will have the same strong distinctive character because the graphical representation does not alter the distinctive character of ‘TEX’, as has been established above. This recognised distinctive character is sufficient to show use of the mark ‘TEX’ in France during the relevant period.

Taking the evidence in its entirety into consideration the Opposition Division is of the opinion that the opponent has shown that it made a reasonable effort to establish the ‘TEX’ trademark and gain market share in France. The catalogues prove the nature, time and place of use. The lack of invoices showing sales in France is compensated by the INPI decision that recognises the “strong distinctive character” and the knowledge of the TEX brand on the clothing market in France. Such recognition of the mark is indicative of an extensive commercial volume, duration, and frequency of use in the relevant territory, and therefore extent of use has also been proved.

The catalogues show that the place of use is France. This can be inferred from the language of the documents, French, and the Euro currency mentioned. The INPI decision relates also to the territory of France.

With regard to the time of use, most of the evidence is dated within the relevant period. At least one catalogue for each year from 2010 to 2015 shows dates that fall within the relevant period. The INPI decision is dated 10/06/2015 near the end of the relevant period.

Most of the invoices and offer sheets presented are within the relevant time period but cannot be accepted as evidence to show sales of the relevant goods in France under the ‘TEX’ trade mark. This is because they only show purchases of Carrefour from the countries where the ‘TEX’ labelled goods are manufactured. Where these goods were subsequently sold is not evident. Therefore this evidence can only be considered as supportive.

Conclusion

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145, and 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

Taking into account the evidence in its entirety, although the evidence submitted by the opponent is not particularly exhaustive, it does reach the minimum level necessary to establish genuine use of the earlier trade mark during the relevant period in the relevant territory.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

1. The goods

The goods on which the opposition is based are the following:

Class 25: Clothing including boots, shoes and slippers.

The contested goods are the following:

Class 25: Clothing, footwear, headgear.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘including’, used in the opponent’s list of goods, is in general used to indicate that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107). However boots, shoes and slippers are not included in clothing. For the avoidance of doubt the opposition will proceed on the basis of just clothing which will not be to the prejudice of the opponent as will be seen below.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Clothing is identically contained in both lists of goods.

The contested footwear is similar to the opponent’s clothing. Footwear serves the same purpose as clothing: both are used for covering and protecting parts of the human body and for fashion. They are often found in the same retail outlets. Consumers looking for clothes will expect to find footwear in the same department or shop and vice versa. Moreover, many manufacturers and designers will design and produce both clothing and footwear. Therefore, the goods are similar.

The contested headgear is similar to the opponent’s clothing. Headgear and clothing are of an identical or very similar nature. They also serve the same purpose, in particular in the case of clothing designed to give protection against the elements. Furthermore, headgear is seen not only as something worn on the head to protect against the weather, but also as a fashion article, possibly matching an outfit, and for this reason is sometimes chosen to complement clothing. The distribution channels for these goods coincide and their sales outlets or the retail departments they are sold in are often either the same or at least closely connected. Taking all these factors into account, headgear and clothing are considered similar.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods found to be identical and similar are directed at the public at large.

The degree of attention is considered to be average.

3. The signs

TEX	max-Tex
Earlier trade mark	Contested sign

The relevant territory is France.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The signs share the term ‘TEX’, which is defined as designating ‘a unit of measure for the linear mass density of fibers’ (Reference: Translated from French Larousse Dictionary). The Opposition Division considers that this term is likely to be understood only by professionals in the textile and clothing sectors and so this meaning is irrelevant for the public at large. The general public, more prone to confusion, will perceive the part ‘TEX’ as an abbreviation of the word ‘textile’ which is the same in French. The element ‘TEX’, therefore, will be associated by the French general public with ‘textile’. This is the outcome of previous decisions, namely, 12/05/2014, B 2 218 108, DUALTEX (fig.) / TEX; 27/03/2014, B 2 137 902, SUPERTEX /TEX; 20/12/2013, B 2 100 116, dmtex (fig.) / dm; and 28/11/2013, R 167/2013-5, T-TEX / TEX (fig.). Therefore ‘TEX’ has a weak distinctive character for the the French general public in relation to the goods at issue which are either made of textile or can be made of textile.

The earlier trade mark is a word mark made up of the single verbal element ‘TEX’, which for the reasons described above is weakly distinctive for the goods at issue for the relevant public in the French territory.

The contested sign is the word mark ‘max-Tex’. The element ‘TEX’ of contested sign will be understood as described above by the relevant public and so is weak for the goods at issue. The hyphen is a common punctuation mark and will have little or no impact on the consumer. This element is non distinctive and simply serves to clearly separate the two verbal elements. Contrary to the argument of the applicant that claims that ‘max’ will be perceived as the abbreviation of the given name ‘Max’, in this particular context followed by the hyphen and ‘TEX’, the Opposition Division considers that the relevant public will interpret ‘max’ as an abbreviation for ‘maximum’ which is the same word in French. This will be perceived as laudatory and therefore non-distinctive in relation to the goods at issue.

The word element ‘max’ and the hyphen, therefore, are less distinctive than the common element ‘TEX’ which has a low degree of distinctive character.

Visually and aurally, the signs coincide in the weak element ‘TEX’ which is the earlier mark in its entirety. They differ in the non-distinctive word ‘max’, at the beginning of the contested sign which has no counterpart in the earlier mark. In addition, they differ visually in the non-distinctive hyphen present only in the contested sign.

Therefore, the signs are visually and aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning, the signs are similar to an average degree.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for all of goods in question

5. Global assessment, other arguments and conclusion

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a higher degree of similarity between goods and services may be offset by a lesser degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

In the present case the goods are partly identical and partly similar. The signs are similar visually, aurally and conceptually to an average degree. The signs coincide in the weak element ‘TEX’, but the differentiating elements are non-distinctive (‘max’ and the hyphen) and will be given no trademark significance by the consumer. Therefore there is a likelihood of confusion on the part of the relevant public.

Indeed, given that the earlier mark is contained in its entirety in the contested sign, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, there is a likelihood of confusion on the part of the general public in France.

Therefore, the opposition is well founded on the basis of the opponent’s French trade mark registration No 1 205 373. It follows that the contested trade mark must be rejected for all the contested goods.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Lars HELBERT

Lynn BURTCHAELL

Claudia MARTINI

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.